The Complainant is Groupement des Cartes Bancaires, France, represented by Inlex IP Expertise, France.
The Respondent is Will Eom, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with L GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Registrar confirmed that the language of the registration agreement is German, whereas the Complaint was submitted in English. On September 11, 2019, the Center sent the Parties an email in English and German regarding the language of the proceeding. In its communication of September 11, 2019 to the Center, the Complainant referred to the Complaint in which it already requested the proceeding to be conducted in English. No reply was received from the Respondent.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 2, 2019.
The Center appointed Alfred Meijboom as the sole panelist in this matter on October 11, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant provides a system of payments and cash-withdrawals by card involving some 130 banks and payment institutions and processing more than 11 billion transactions in 2018. The card system is operated under the designation “CB”. The Complainant is owner of different trademarks, including:
- French national trademark CB with registration No. 1368872 of August 28, 1986, for goods and services in classes 16, 28, 35, and 36;
- European Union trademark CB with registration number 000269290, registered on September 29, 2005, for goods and services in classes 16, 35, and 36.
The Respondent registered the disputed domain name on July 6, 2019. The disputed domain name resolves to a parking page, mainly in French with hyperlinks representing, inter alia, “Carte Bancaire”, “Carte Visa”, “Payer” as well as the Complainant’s wordmark CB, which link to operators in the field of payment services. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is identical to its trademark CB as it as a settled case law under the UDRP that the generic Top-Level Domain (“gTLD”) has no capacity to distinguish a domain name from a trademark.
The Complainant further claims that the Respondent has no right or legitimate interest in the disputed domain name, because the Respondent concealed his identity by use of a privacy shield, the Respondent’s name is not composed of “CB” and to the Complainant’s best knowledge the Respondent is not commonly known as “CB” or operated a business under such name, and has no rights, such as trademark rights, in “CB”. Furthermore, the Complainant has not authorized the Respondent to register or use a domain name which comprises its trademark CB, and there is no business relationship between the Complainant and the Respondent. And finally the Complainant contends that the disputed domain name is neither used for bona fide offeringof goods or services nor for legitimate noncommercial use. According to the Complainant there is clear evidence that the Respondent takes unfair advantage of the Complainant’s trademark CB and its business by diverting consumers from the Complainant’s website to the website under the disputed domain name.
The Complainant contends that the Respondent registered the disputed domain name in bad faith because “CB” has no meaning in French or English and is not a dictionary or commonly used word, the Complainant’s trademark CB is well known, the registration of the disputed domain name under the gTLD “.money” cannot be a coincidence, and the parking page to which the disputed domain name resolves reproduces the Complainant’s trademark CB, as well as the Complainant’s financial activities. Finally the Complainant claims that it is customary for the Respondent to be engaged in cybersquatting (MySpace Inc. v. Will Eom,WIPO Case No. D2008-0448; and NH Hoteles, S.A. v. Will Eom,WIPO Case No. D2010-0227).
The Complainant alleges that the disputed domain name is also used in bad faith because the use of the disputed domain name is deprived of any real and substantial offer of goods and/or services, the disputed domain name disrupts the Complainant’s business and causes harm to the Complainant’s trademark CB, the Respondent may be involved in a phishing scheme, and the Respondent did not reply to the Complainant’s attempt to find an amicable solution in connection to the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. The Language of proceedings
The first matter to be addressed is the language of the proceedings.
Article 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The language of the Registration Agreement is German. The Complainant requested for English to be the language of the proceedings for the following reasons. The Complainant being based in France and the Respondent being based in the Republic of Korea, English is the fairest neutral language for the proceedings, and English is the most widely used language in international relations. Further, the Complainant contends that the Respondent deliberately chose to register the disputed domain name with the new gTLD “. money” which evidences the Respondent’s ability to understand English. The Complainant is also unable to communicate in German and would incur considerable costs in retaining translation services. And finally, the Respondent has been involved as respondent in NH Hoteles, S.A. v. Will Eom, supra, in which the panel accepted English as the language of proceedings.
In order for the Panel to grant the request to change the language of the proceedings into English the Complainant should have shown that the Respondent sufficiently understands English to appreciate the Complaint and, if the Respondent so wishes, file a response. The mere fact that the Complainant does not speak the language of the Registration Agreement is not sufficient. Other factors to be considered are the expenses to be incurred in case the language of proceedings is German, and possibility of delay in the proceeding in the event translations are required (e.g., Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679).
In the present case, there is no direct evidence that the Respondent understands English, or as the case may be, German. The Complainant did, however, refer to a previous case under the UDRP (NH Hoteles, S.A. v. Will Eom, supra) where the respondent replied in English and had a website in English and the panel found that the respondent was sufficient comfortable in English. The Complainant argues that the respondent in that case is the same person as the Respondent in the present case. The Panel agrees that they have the same name and country, and, absent denial by the Respondent, is satisfied that they are one and the same person. The Panel is therefore satisfied that the Respondent is sufficiently proficient in English to understand the Complaint. On the other hand, absent communication from the Respondent, there is no indication that the Respondent understands German, while the Complainant claims that it does not.
Given the circumstances mentioned above the Complainant would be unfairly disadvantaged by being forced to translate the Complaint in German. The Panel decides that the language of the proceedings shall be English. 6.2. Substantive issues
The Respondent did not file a Response. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view of UDRP panels is that the respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in this proceeding. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well established that the gTLD – in the present case “.money” – should be disregarded in the assessment under paragraph 4(a)(i) of the Policy. When ignoring the gTLD “.money”, the Panel finds that the disputed domain name is identical to the Complainant’s trademark CB.
Consequently, the first element of paragraph 4(a) of the Policy has been met. B. Rights or Legitimate Interests
The Complainant states that it has not authorized the Respondent to use its trademark CB as part of the disputed domain name and that the Respondent is not commonly known by the disputed domain name, which the Respondent has not denied. As the disputed domain name resolves to a parking page with hyperlinks representing the Complainant’s trademark CB, as well as other terms in connection to the payment services offered by the Complainant, the Panel is satisfied that the Respondent lacks rights and legitimate interests in the disputed domain name.
The Panel finds that the Complainant has made an unrebutted prima facie case. As a result, the Panel finds the Respondent has no rights or legitimate interests in the disputed domain name, and the second element of paragraph 4(a) of the Policy is also met. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.
In the Panel’s view, the Respondent must have had the Complainant’s trademark CB in mind when he registered the disputed domain name, as the term “CB” is not a dictionary word or otherwise commonly used and the Complainant has been actively using the trademark CB for many decades in France and elsewhere, and the Respondent shortly upon registration of the disputed domain name linked it to a parking page in French, which, inter alia, represented the Complainant’s trademark CB and its commonly used meaning of “Carte Bancaire”. Also the fact that the Respondent chose to register “CB” under the gTLD “.money” makes it likely that he had the Complainant’s trademark CB, which is registered and used for financial services, in mind when he registered the disputed domain name.
Further, the fact that the disputed domain name resolves to a parking page which makes use of the Complainant’s trademark and links to parties which offer similar financial services as the Complainant for the Respondent’s commercial gain is evidence of the Respondent’s use of the disputed domain name in bad faith.
The Panel finds that the third element of paragraph 4(a) of the Policy is also demonstrated. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Alfred Meijboom
Sole Panelist
Date: October 25, 2019
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